Legal Question in Intellectual Property in Maryland

Common Law Trademark Vs Federal Trademark

I am part of an organization that contains several chapters nation wide. Each chapter is a separate organization Incorporated with in their local state. Each chapter has until recently shared resources (game system, name, etc). One of the chapters has applied for and received a Federal Trademark of the game system's name and the name used by all of the chapters across the country. They are now pushing every chapter to sign a contract with terms of use on the rules to this game and the name of the organization. My understanding of copyright law is that a game cannot be copyrighted; that the rules of a game are always public domain but content of that game (board, cards, etc) is protected by copyright. Also, my understanding of Trademark law is that simple use of a logo, name, etc. grants you a Common Law Trademark in the area that the name, logo, etc. is known and that registration of a State or Federal Trademark will stop expansion of a Common Law Trademark, but will not prevent use within the geographic area of the CLT. Am I correct in my thoughts on Copyright and Trademark Law or can this chapter push its ''rights'' and stop me from playing a game that has been in my community for 15+ years (in other communities for much longer)?


Asked on 12/04/01, 3:13 pm

1 Answer from Attorneys
Lawrence Graves Coolidge & Graves PLLC

Re: Common Law Trademark Vs Federal Trademark

There is actually a fascinating sub-species of trademark case law applicable to these circumstances, dating back about 100 years to the time when YMCA morphed from a rag-tag network of local independent chapters into a national organization. The courts took many liberties with black-letter trademark law to reach the result that the national organization would have enforceable rights even against the local affiliates of long standing.

Although old, those cases have not been overruled (well, at least not as of the last time I looked!). So I think that the likelihood of one of the local chapters seeking to enforce rights against other local chapters _and_ the national organization is remote.

If you think that it would be useful for you or the national organization to get a legal opinion on this issue, let me know. Best wishes,

LDWG

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Answered on 12/04/01, 3:34 pm


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